Intellectual Property > IP Newsflash > PTAB Explains how to Determine Whether a Reference Qualifies as a “Printed Publication” Under 35 U.S.C. § 102(b)
07 Sep '16

In a final written decision issued on August 30, 2016, in an inter partes review, the Patent Trial and Appeal Board (PTAB) examined whether a “Request for Comments” (RFC) document qualified as a printed publication under 35 U.S.C. § 102(b) and, as such, whether an obviousness challenge could be based on that document.

Apple filed a petition for inter partes review of a patent owned by VirnetX directed to secure methods for communicating over the Internet. Apple alleged that claims of VirnetX’s patent were obvious over a prior art patent in combination with a document identified as RFC 2401. VirnetX disputed whether RFC 2401 qualified as a printed publication as of the date identified on the face of the document and whether it was publicly accessible as of that date.

Apple relied on an expert declaration to explain what an RFC is and why RFCs meet the definition of printed publications. Apple’s expert testified that RFCs are documents that are prepared and distributed by the Internet Engineering Task Force, and each RFC relates to an Internet standards-related specification. Apple’s expert also opined that each RFC contains a date on its cover page that reflects the date that the document was released to the public.

In challenging RFC 2401, VirnetX attempted to analogize the document to a thesis with a date stamped on a cover page and a notation that the thesis was “approved for public release; distribution unlimited.” Prior PTAB decisions had found that, for such a document, absent any further indication that the document was actually released publicly, distributed to the public, or entered into a publicly accessible electronic database, the public accessibility of the document had not been established.

The PTAB credited Apple’s expert’s testimony establishing that RFCs are publicly disseminated and contain publication dates printed on their covers. The PTAB noted that RFC 2401 requested suggestions and improvements for an Internet standards protocol, “precisely the type of document whose very purpose is public disclosure,” and that the document was disseminated to persons of ordinary skill interested in computer networking security, which indicated that the document was “publically accessible.” In view of this evidence, Apple established that RFC 2401 qualified as a prior art printed publication under 35 U.S.C. § 102(b).

Apple Inc. v. VirnetX, Inc., IPR2015-00812, Final Written Decision, Paper No. 43 (PTAB Aug. 30, 2016).